WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
H & M Hennes & Mauritz AB v. Domain Admin, Private Registrations Aktien Gesellschaft / Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org
Case No. D2017-0491
1. The Parties
Complainant is H & M Hennes & Mauritz AB of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
Respondent is Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines / Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <costores.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 9, 2017. On March 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 13, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 14, 2017.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 6, 2017.
The Center appointed Martin Schwimmer as the sole panelist in this matter on April 13, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant owns the trademark COS which it has used worldwide since 2007 as the name for a chain of clothing stores. It utilizes the domain name <cosstores.com> and regional variants thereof (i.e., <cosstores.us>), and utilizes the term "cosstores" in social media. The disputed domain name was created on June 25, 2009. Respondent has used the disputed domain name to display pay-per-click advertisements relating to clothing.
5. Parties' Contentions
Complainant, H & M Hennes & Mauritz AB, operates over 4,200 clothing stores in 64 countries, under six brands. It opened its first COS store in London in 2007. It operates 177 COS stores in 32 countries. It owns numerous trademark registrations for COS and COS and design, including International Registrations with registration dates as early as 2007. It operates an online store for COS-brand clothing, at "www.cosstores.com" and at several regional variants, such as "www.cosstores.us". It obtained the <cosstores.com> domain name in 2006. It utilizes variants of the term "Cosstores" on various social media platforms. For example, Complainant operates a YouTube channel, and an Instagram account, under the user name "Cosstores".
Complainant alleges that the disputed domain name is identical or confusingly similar to its COS trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent (or unknown successors in interest) have held the disputed domain name through a succession of proxy services, and have never revealed a trading name. The disputed domain name has been used to host advertisements, some of which promoted categories of clothing.
The disputed domain name was registered and is being used in bad faith. After Complainant contacted Respondent, a broker representing Respondent offered to sell the disputed domain name to Complainant for USD 999. Complainant notes that the broker representing Respondent, Skenzo, has itself been the respondent in other UDRP proceedings.
Complainant notes that the day its original Complaint was served on Respondent through its proxy service, that proxy service withdrew as the public agent for Respondent, revealing, it seems, a second proxy service as the customer of the first proxy service.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has provided ample evidence of its use and registration of the COS trademark. Although it does not argue as such, it has provided evidence of what arguably demonstrates unregistered trademark rights of the mark COSSTORES. If the use in connection with domain names and social media handles does not rise to technical trademark use, then it certainly is sufficient to create some sort of connection between that term and Complainant, in the mind of the Internet user (including Respondent).
The second level of the disputed domain name, "costores" includes Complainant's COS trademark in its entirety. It also is identical to the term "cosstores" with the deletion of the single letter "s". The disputed domain name <costores.com> can be read quickly as consisting of Complainant's COS trademark and the descriptive term "stores". Furthermore, as Complainant utilizes the COS trademark as the name of a chain of stores, this reading of the disputed domain name exacerbates a possible connection with Complainant. The Panel also takes notice of the fact that "costores" does not appear to be a word, and when "costores" is entered as a search term in the Google search engine, the search is performed for the term "cosstores". In the absence of any other evidence let alone argument from the Respondent, the Panel accepts that the disputed domain name is confusingly similar to Complainant's trademark. Moreover, the Panel finds that the disputed domain name could easily confuse the reader as being that of Complainant, or could lead to confusion that the disputed domain name had some association with Complainant's trademark when in fact it does not. The Panel therefore concludes that the disputed domain name is confusingly similar to the trademark of Complainant.
B. Rights or Legitimate Interests
The second ground to be demonstrated by Complainant, according to the provisions of the Policy, is Respondent's absence of any rights or legitimate interests in the disputed domain name, per paragraph 4(c) of the Policy.
Previous UDRP panels have consistently held that it is sufficient for a complainant to prove a prima facie case that the respondent does not hold rights or legitimate interests in the domain name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain name.
The Panel is satisfied that Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the COS trademark in a domain name or in any other manner. Complainant alleges that there is no such connection here. The Panel finds there is no evidence of legitimate noncommercial or fair use.
In addition, Respondent has not submitted any reply to Complainant's contentions.
Therefore, in light of Complainant's prima facie case, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
While the stated creation date of the disputed domain name is 2009, there has been a succession of proxy services, and fictitious and/or incomplete entries appearing as Registrant for the disputed domain name. As noted above, after Respondent was served with the original Complaint, the proxy service acting as agent apparently withdrew, revealing a second proxy service as the customer of the first proxy service. Because the creation date of the disputed domain name is subsequent to Complainant's registration and use of its trademark, and because there is no showing that there has ever been good faith use of the disputed domain name, the Panel does not have to determine whether the present Respondent is or is not the original Respondent. Put another way, there is no evidence that there has ever been a good-faith taker in this chain of title (if it is in fact a chain), because there appears to have been only bad faith use of the disputed domain name.
The relevance of proxy services here is that, while the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") characterizes the consensus view that "use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith." WIPO Overview 2.0 at paragraph 3.9. The Panel notes that where a "disclosed" registrant in turn appears to be yet another privacy or proxy service, referred to as a "Russian doll" scenario, the Panel may build a substantive finding (presumably relating to bad faith) on that fact (see comment to paragraph 4.9 of WIPO Overview 2.0, citing TDS Telecommunications Corporation v. Registrant  Nevis Domains and Registrant  Moniker Privacy Services, WIPO Case No. D2006-1620, <tdstelecom.net>, Transfer; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062, <creditkeeper.com>, Transfer; CanWest Mediaworks Publications Inc. v. Laksh Internet Solutions Private Limited / SA c/o FP, WIPO Case No. D2008-0687, <theedmontonjournal.com>, Transfer; Jay Leno v. St. Kitts Registry, Domain Names Administration, WIPO Case No. D2009-0571, <jaylenoshow.com>, Transfer.
Accordingly, the Panel views both the persistent use of proxy services and seemingly false names in the chain of title of the disputed domain name, and the "Russian doll" ownership on the day the Complaint was filed, as evidence of bad faith registration.
Additionally, taking into account that (1) Complainant has established sufficient rights in the COS trademark, and sufficient reputation in the Cosstores term; (2) that the disputed domain name was periodically used to display advertisements relating to clothing (Complainant's field of use); and (3) that a representative of Respondent requested that Complainant purchase the disputed domain name for a fee in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain name, the Panel finds that Complainant has established that the disputed domain name was registered and is being used in bad faith, as outlined in paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <costores.com> be transferred to Complainant.
Date: May 4, 2017